The tobacco industry lobbied ferociously against the Australian plain packaging law, but it was passed. They sued the Australian government and lost. They are funding tobacco-producing nations in taking a case to the World Trade Organisation alleging that Australia has breached international law. But intellectual property and trade laws don’t trump health protection. The Australian High Court said that intellectual property is designed to serve public policy as well as private interests. Australia implemented its law to fulfil its commitments under the World Health Organisation convention on tobacco control (FCTC). Ireland has also signed and ratified the FCTC, and while the convention doesn’t strictly require plain packaging laws the WHO encourages them. The Minister for Health’s policy of a tobacco free Ireland by 2025 was announced as an FCTC implementation measure.

The Oireachtas Joint Committee sought submissions on plain packaging and recently held hearings. Unsurprisingly, it received opposition from the tobacco industry. The industry made four core points:

there is no evidence that the law will reduce smoking;

it would breach national and international law;

it would lead to an increase in counterfeiting and

it will damage Ireland’s reputation for protecting intellectual property.

The Law Society made submissions, drafted by its intellectual property committee, which made the very same four core points as the industry, in almost identical terms. They gave no alternative view or guidance on the existence or strength of arguments that could be made against the claims of the industry.

The tobacco industry and the Law Society, of course, have a point: these laws fundamentally restrict intellectual property rights. But intellectual property rights are negative: they allow you to stop others using similar names. They do not, in themselves, give you the right to use them. Trade mark law allows authorities to refuse the registration of a trade mark if the mark is contrary to public policy.

Drug companies cannot advertise directly to consumers in Ireland. Pharmacists are required to suggest generic alternatives to branded products. These regulatory measures challenge the intellectual property rights of drug companies, who also happen to be significant foreign direct investors in Ireland. But the tobacco industry and the Law Society are not equally concerned about the effects of those laws on “Ireland Inc”. They are more interested in trying to gain support from the food industry. The Director General, Ken Murphy, worries that the next target will be Kerrygold. This ignores the obvious point that consumer foodstuffs are not, by their nature, harmful to public health when consumed as intended. This is not the case with tobacco.

All anti-smoking measures introduced over the past two decades restrict and interfere with the tobacco industry’s interests. Most also limit intellectual property rights, particularly their trade marks. “Marlboro Lights” is a registered Irish trade mark, but it can no longer be used because it suggests one product is less harmful than another. Most would consider such a restriction to be reasonable and justifiable.

The tobacco industry and the Law Society argue that plain packaging laws breach international law, in particular the TRIPS and Paris Conventions. This is not a novel legal debate: the Australians have already been down this road and there are copious academic texts and commentaries on the argument. Respected intellectual property academics like Professors Mark Davison and Matthew Rimmer argue the role of international law may be quite limited. They point to the fact that international law does not give the tobacco industry a right to use their intellectual property. It follows that if a government restricts or prohibits the use of branding, it is not attacking a protected right of the industry.

But the Law Society told the Oireachtas none of this.

The spectre of unconstitutionality was even raised by by the tobacco industry and the Law Society, but they give little detail of this argument and reason by analogy to electricity pylons and planning permission. A highly respected member of the Law Society’s own committee that drafted the submissions doesn’t agree – but this view was not put before the Oireachtas.

The tobacco industry and the Law Society all but ignore the public health motivations of plain packaging and fall back on the weak assertion that there is no evidence to justify it. This is, at best, debateable and, at worst, circular. Evidence that the law will work can only be obtained after introduction. Furthermore, the Australian law was based on significant research and was supported by leading health experts. After the law was introduced calls to smoking quitlines soared and the rate of smoking declined. Even supporters caution that it is too soon to know if the law caused that reduction, but the indications are positive.

The tobacco industry and the Law Society are also concerned about counterfeiting because, they say, plain packs will be easier to copy. The argument is nonsense and when the Gardaí and Revenue Commissioners told the Oireachtas that they did not expect an increased workload as a result of a plain packaging law, the Law Society dropped the claim. The argument is also contradictory and the tobacco industry has long maintained that all paper-based packaging is easy to counterfeit. In fact, the most difficult element of packaging to copy is the Revenue stamp, which will still appear on plain packs. As Cancer Research UK point out “The reality is that all packs are easy to counterfeit and that plain packaging will not make any difference.”

Australia is the only country to have introduced plain packaging and it has done so very recently. Firm evidence of the success of the law is not yet available but the signs are positive. There are very convincing arguments against legal objections to such a law, but the Law Society failed to bring them to the attention of the Oireachtas.

Controversy over the submissions of the Law Society on proposed plain packaging law for tobacco products continues.

It seemed, initially, that the Law Society was going to take the concerns raised by myself and a number of colleagues seriously. I was told that certain things would be looked into and a proposal was going before the Council of the Law Society in relation to lobbying. But we were also referred to as a “vested interest” (!) by the President of the Law Society who subsequently dismissed our views as “conspiracy theories” and has effectively refused to look into the issue any further.

A member of the Council of the Law Society has written an article which is distinctly dismissive of our concerns, despite the following admission:

it’s important to note that what this column knows about IP law could be written on the back of a plain cigarette packet with room for several “SMOKING KILLS” reminders, so we are not taking sides here

When they appeared before the Oireachtas Joint Committee on Health & Children, the President and Director General were also at paints to point out that IP was not an area they specialised in. The problem with the submissions is that if they are examined with any reference to people who do have knowledge of IP law it is plainly obvious that the submissions do take sides.

In its efforts to thwart the introduction of plain packaging of tobacco products in Ireland, Big Tobacco and its allies like the Law Society of Ireland have marshalled a number of arguments, similar to those which decisively rejected in Australia. It is disappointing that the Law Society of Ireland has been promulgating a number of myths promoted by Big Tobacco. It should better than to uncritically adopt the rhetoric and the talking points of the tobacco industry … Rather than listen to Big Tobacco’s phony arguments about trade and intellectual property, Ireland should introduce the plain packaging of tobacco products to protect the common good and the public health of its people.

Further to my recent post about the submissions of the Law Society on plain packaging of tobacco products to the Oireachtas Joint Committee on Health and Children, the below letter was sent yesterday by a number of solicitors to that Committee.

There were newspaper reports yesterday of Damien O’Regan’s proceedings against Andy Quirke and RTÉ arising out of the Damo character played by the former and broadcast by the latter (O’Regan v. Quirke & RTÉ 2013/9674P).

suing … for alleged copyright infringement … [and that] he claims he registered the name ‘Damo’ with the Irish Patents Office.

Mr O’Regan told the court that the use of the name Damo is a clear breach of his trademark and said he had not given his consent for its use by Mr Quirke.

It may well be that Mr O’Regan will be suing on the basis of copyright and trade mark rights, but that seems unlikely. Mr O’Regan holds a registered trade mark for the word DAMO and is suing Mr Quirke and RTÉ for allegedly infringing it. Kate Gorey points out that this may be the first “character mark” case before the Irish courts.

Copyright and trade marks are not the same thing. Confusion about the types of intellectual property that exist and the rights they give is commonplace. We aspire to be a “knowledge economy”. Any economy like ours requires the creation of intellectual property to survive in the contemporary market. So the above story is a good excuse to briefly outline the types of intellectual property that exist.

What intellectual property rights are there?

The following is an attempt to summarise the different rights available so that they can be distinguished. Not all are strictly intellectual property rights but they are often considered together. The main rights are copyright, trade marks and patents. In very simplistic terms: copyright protects things like books and music, trade marks protect brands and patents protect inventions.

Copyright: a property right in a work (generally creative works, but it can include compilations of works and databases). In Irish law copyright exists once the work is created. It does not apply to ideas, only the implementation of them. It does not have to be registered. When a work was created is a question of fact but there is no specified way of establishing that. For example, it is not required that you post a song to yourself in order to copyright it, but doing so might help you establish the date of creation. Copyright is governed by the Copyright and Related Rights Acts 2000 to 2007.

Trade mark: a sign capable of being represented graphically (including in text) which can distinguish goods or services of one undertaking from those of other undertakings. Trade marks are registered with the Irish Patents Office (community trade marks, which also have force in Ireland, are registered with the strangely-titled Office for Harmonization in the Internal Market). There are no private trade mark registries. Trade marks are governed by the Trade Marks Act 1996.

Patent: an invention which is new, involves an inventive step and is susceptible to industrial application. Irish patents are registered with the Irish Patents Office and are governed by the Patents Acts 1992 to 2012.

Design rights, industrial designs and database rights: specific forms of intellectual property right. They are comparatively complicated and what is protected can overlap with the other rights. For more see the FR Kelly FAQ on copyright and designs, the IPO on designs or OHIM on designs.

Passing off: a tort of passing off goods or services as those of another in a manner calculated to deceive. It is not governed by legislation and does not have the same remedies or enforcement procedures as, for example, copyright, trade marks and patents. It may be thought of as a form of protection for unregistered trade marks (which don’t strictly exist in Ireland).

Registered business name: these are not a form of intellectual property but are often mistaken to be one. I wrote about them here.

Domain name: these are registered internet addresses. Also not strictly a form of intellectual property but are lumped in with it.

Don’t be fooled by inauthentic registrars

A number of scams have operated in the past decade or so whereby businesses receive letters or emails offering to register some form of intellectual property or protect a right. There are genuine professional service providers like trade mark and patent agents who advise on protecting and registering intellectual property. They can prepare and lodge registration applications and deal with them until they are granted. But they do not, themselves, act as the registrar.

The copyrightyourname.com site appear to offer, for a substantial fee, some form of registration service but the site is highly confused. The website operators cannot offer the service advertised and must know that they cannot offer it. You cannot register copyright in Ireland. You can register trade marks, but only with the Irish Patents Office or OHIM. A private entity like copyrightyourname.com cannot carry out that function.

What rights the registration of a name as a trade mark provides is a more complicated question. You can, by all means, join copyrightyourname.com and part with your money, but you will not be getting a trade mark in return and you will not be getting any additional copyright protection.

Instagram has courted controversy this week by announcing changes to its terms and conditions. There are clauses in Instagram’s new terms which are likely to cause them difficulty with privacy and advertising regulators but the most controversial new terms are that:

Instagram will have a full licence to use your photographs, including to sub-licence or transfer use of them; and

customers of Instagram (that’s advertisers, not you) can pay to have your name or photos (along with other information) displayed in advertising messages, without paying you or even notifying you.

Changes to intellectual property terms on free online services have long been a source of controversy, not least because when services like Instagram are involved many of the users are involved in creative industries. Even if a user is not a creative professional, the service involves the creation of intellectual property. Mess with those users’ rights at your peril.

Of course, blame for these changes is being laid firmly at the door of Facebook who famously paid through the nose to acquire Instagram. While the new terms are not surprising, given the involvement of Facebook, whoever owned Instagram was always likely to attempt such a change in order to monetise the business.

If the online reaction is anything to go by, the changes are a boon for Flickr. The death knell of that service had been sounding for some time but it, and its new app which has launched with serendipitous timing, could see a significant return of dormant users. I have noticed a surge in activity in the past few days as Instagram users have returned to Flickr and began uploading photos for the first time in months while also seeking out contacts from the Instagram universe.

But what do Flickr’s terms say?

With respect to … Content you elect to post to other publicly accessible areas of the Services, you grant Yahoo! the royalty-free, perpetual, irrevocable, non-exclusive and fully sub-licensable right and licence to use, reproduce, modify, adapt, publish, translate, create derivative works from, distribute, perform and display such Content (in whole or part) worldwide and/or to incorporate it in other works in any form, media, or technology now known or later developed.

The difference between this and what Instagram’s terms will say is not clear to me, apart from the fact that Instagram are more explicit in what they plan to do with your photos. Neither is it clear if a Flickr account which is set to private constitutes a “publicly accessible area of the Services”.

Strangely, this does not appear to be the situation in the US, where their local version of the Yahoo!/Flickr terms are limited and provide a licence “solely for the purpose for which such content was submitted or made available.” This limitation does not appear in the terms applicable in Ireland. So is there any difference between Instagram and Flickr?

Since 2004 most intellectual property litigation in Ireland has taken place in the Commercial Court, which is not a true court with jurisdiction separate to that of the other courts but rather is a list of the High Court.

The Commerical Court was established following the recommendations of the Committee on Court Practice and Procedure, of which my late father was a member, and offers litigants an involved case management system and fast-tracked procedures. For IP claims, there is no minimum claim value to qualify for entry. However, costs in running a Commercial Court case are a multiple of what one might expect in an ordinary High Court case.

Obviously not all disputes require such firepower but we don’t see much IP litigation in the District or Circuit Courts, where costs are lower and the lifetime of a case reasonably short.

One recent example of such everyday IP litigation concerns the payment of damages to a broadcaster for showing pay-tv in public without the appropriate subscription (ie. licence). From the Kerryman:

[A] hotel has been ordered to pay €5,174 in royalty [sic] to British Sky Broadcasting who told the court that the hotel had screened sports events in the bar without a commercial contract from the broadcaster.

Judge Ray Fullam heard that an inspector from IMRO had visited the hotel on four occasions in 2006 and 2007. During the inspections, the court heard, sporting events including English premiership soccer matches and Heineken Cup rugby games were showing on a television in the residents’ bar.

The hotel previously held a contract with Sky but it had not been renewed.

Counsel [for the hotel] argued that as the television in question was in a premises where sleeping accommodation is provided and amenities are exclusively or mainly provided for residents, for which there is no discretionary charge, the hotel was exempt from the need for a contract under section 97 of the copyright act.

Judge Fullam found against the hotel and granted an injunction barring the hotel from showing matches on Sky without a contract.